Trademark Law in China

With offices in Beijing and Shanghai, Wang & Wang assists clients with the registration and protection of trademarks in the People's Republic of China. Obtaining exclusive rights to the use of a trademark in China requires registration of the mark. The exception is that unregistered famous marks may block the registration of similar marks in China in accordance with China's revised Trademark Law and obligations under the Paris Convention and the 1995 U.S. - China Intellectual Property Protection Agreement ("IP Action Plan"), provided that the owner of the famous mark can prove that the mark was well-known in China before the filing date of the similar mark.

Registration Procedure

A trademark applicant must file an application with the China Trademark Office. Normally, the Trademark Office renders a decision within 18 months after it receives all supporting documents. If the application is approved, the mark will be published in the China Trademark Gazette. After the mark is published, there will then be a three-month opposition period. If no opposition is filed within that period, the application will mature into registration. The certificate will then be issued and the mark will be published in the Trademark Gazette again as a registered mark.

Term of Protection

The term of protection is ten years from the date the registration is granted. The trademark may be renewed for an additional ten year term within six months before the expiration date of the mark's present term. Where no such application could be filed within the said period, a grace period of six months may be allowed. If no renewal is filed within the grace period, the registered trademark shall be canceled. Any renewal of registration shall be published after approval. Proof of use of the trademark prior to renewal is not currently required.

Types of Trademarks

China law distinguishes among three types of trademarks:

Principal Mark - Including trademarks for goods and service marks

Collective Mark - A mark registered on behalf of an organization, association or other entity to be used by members of the association in business activities to indicate their membership in the association

Certification Mark - A mark controlled by an association which is capable of monitoring a particular good or service, but is licensed to anyone with respect to qualifying goods or services to prove geographical origin, raw material, mode of manufacture, quality, or other specific characteristics

Priority

The Trademark Office accepts applications claiming priority based on applications in other Paris Convention or bilateral treaty nations. Where a foreign party files an application for the registration of a trademark in a foreign country, it may enjoy priority rights if the applicant files an application for registration of the same trademark with the same goods in China within six months from the date of application, in certain foreign countries. Similarly, the applicant of a trademark may enjoy priority rights within six months from the date on which the trademark is exhibited on goods for the first time at an international exhibition held or recognized by the Chinese government. To pursue a priority claim, the applicant must provide a copy of the foreign application upon which the claim is based.

Registrable Marks

Any visual sign, or combinations of thereof, capable of distinguishing the goods or services of a natural person, legal person, or organization, from the goods of others, including words, figures, letters, numerals, three-dimensional signs, and combinations of colors, are eligible for registration as a trademark.

Several types of trademarks are not granted registration in China. Among these are marks that are identical with or similar to the name of any nation, national flag, national emblem, military flag, or symbols of China, or international organizations and other nations or identical with or similar to other registered marks for the same or similar merchandise, marks that are likely to lead the public into misidentification or misconception in respect of the characteristics, quality, or place of origin of the merchandise, marks that are descriptive of the merchandise to which they are applied, and marks which are not distinctive. Suggestive marks are generally considered to be "descriptive" by Trademark Office examiners. For more specific information on marks barred from registration, please contact our office.

Use of Trademarks

Use of a trademark by the registrant or his registered licensee is mandatory. Three years of continuous failure to use a mark will make it subject to cancellation. The owner of a registered trademark may indicate the words "registered mark" or the "R" symbol. Evidence such as invoices, advertisements, sales records, or Customs declarations indicating use of the registered mark will establish use of the mark. Use by a recorded licensee and use of the registered mark in advertisements or exhibitions in China will also satisfy the use requirement.

Licensing and Assignment

The license must be recorded within three months from conclusion of the license contract whenever the registered mark is licensed. The licensee shall identify on the goods or services marked with the licensed mark the name of the licensor and the production location of the goods. An assignment agreement is required for a registered trademark assignment. Both parties shall jointly file an application with the Trademark Office. The assignee shall guarantee the quality of the goods in respect of which the registered trademark is used.

Famous Marks

The Trademark Law explicitly provides protection for foreign famous marks. A mark copying, imitating or translating an unregistered foreign famous mark on identical or similar goods or services with likelihood to cause confusion will not be granted registration or will be prohibited from being used. In addition, a registered famous foreign mark will receive cross-class protection. A mark copying, imitating or translating a registered foreign famous mark on goods or services not identical or similar to those covered by the registered famous mark, causing confusion to the public and possibly causing damage to the trademark holder, will not be granted registration or will be prohibited from being used. The elements for determining whether a mark is famous or not include:

Actions to Prevent or Revoke Registration of Similar Marks

Trademark registration may be prevented or revoked in certain situations:

Oppositions - Filed during a trademark application's three-month opposition period, usually on the grounds that the mark is similar to either another registered mark for the same or similar merchandise, or to a mark that is well known in China

Invalidations - Filed after a mark has been granted registration, on substantially the same grounds as for oppositions, but not where the same arguments have previously failed in an opposition for the same mark

Cancellations - Filed after a mark has been granted registration, on the grounds that the trademark owner violated certain trademark regulations following registration. Such violations may include any of the following: (1) lack of use of the mark for three consecutive years; (2) alteration of, or addition to, the mark; (3) unrecorded assignment of the mark; or (4) the trademark infringes on another person's copyright, new design patent, well-known trademark, other's prior rights, etc., and the infringement has been confirmed by a final judgment

Paths of Appeal

In the event that the Trademark Office returns an unfavorable decision in an application, opposition, invalidation, or cancellation action, an appeal can be filed with the Trademark Review and Adjudication Board for adjudication within 15 days. If the interested party is dissatisfied with the decision of the Board, it may, within thirty days from receipt of the decision, institute legal proceedings to a People's Court. This new remedy satisfies one of China's new obligations under the WTO and TRIPS.

Protection of Trademark Rights

Without authorization from the trademark owner, no one may use a mark identical or similar to the registered mark on identical or similar goods as the registered mark. Violators will be subject to administrative, civil or criminal punishment. The damages awarded to the trademark owner will be calculated upon the illegal profits of the infringer and actual losses to the rights owner. In the event that the damages from infringement are difficult to calculate, the statutory maximum compensation will be RMB 500,000 (about US $61,000), which may be a real deterrent in some cases. In addition, the trademark owner may apply to a competent court for preliminary injunction against ongoing or threatened trademark infringement before a lawsuit is initiated. For more specific information on protection of patent rights, visit our page describing Intellectual Property Enforcement in China.

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